DCT

8:16-cv-00160

Oakley Inc v. Moda Collection LLC

I. Executive Summary and Procedural Information

Parties & Counsel:
- Plaintiff: Oakley, Inc. (Washington)
- Defendant: MODA COLLECTION, LLC d/b/a Moda Sunglass (Missouri)
- Plaintiff’s Counsel: Knobbe, Martens, Olson & Bear, LLP
Case Identification: 8:16-cv-00160, C.D. Cal., 01/29/2016
Venue Allegations: Plaintiff alleges venue is proper based on Defendant’s business activities within the judicial district, including selling allegedly infringing eyewear directly to consumers and retailers and placing products into the stream of commerce with the knowledge they would be sold in the district.
Core Dispute: Plaintiff alleges that Defendant’s eyewear products infringe thirteen of Plaintiff's design patents covering the ornamental appearance of sunglasses and related components.
Technical Context: The dispute is in the high-value fashion and performance eyewear market, where distinctive ornamental designs are a primary driver of consumer choice and brand identity.
Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or licensing history relevant to the asserted patents.

Case Timeline

Date	Event
2000-12-20	Priority Date for D'375 Patent
2000-12-20	Priority Date for D'458 Patent
2002-09-03	Issue Date for D'375 Patent
2003-01-28	Issue Date for D'458 Patent
2005-03-10	Priority Date for D'793 Patent
2006-04-20	Priority Date for D'088 Patent
2006-04-20	Priority Date for D'172 Patent
2006-09-27	Priority Date for D'571 Patent
2006-09-27	Priority Date for D'572 Patent
2007-07-31	Issue Date for D'793 Patent
2008-03-18	Issue Date for D'571 Patent
2008-03-18	Issue Date for D'572 Patent
2008-03-25	Issue Date for D'088 Patent
2008-07-15	Issue Date for D'172 Patent
2009-07-23	Priority Date for D'603 Patent
2009-10-08	Priority Date for D'580 Patent
2010-02-23	Issue Date for D'603 Patent
2010-05-11	Issue Date for D'580 Patent
2011-01-18	Priority Date for D'442 Patent
2011-01-18	Priority Date for D'771 Patent
2011-11-15	Issue Date for D'771 Patent
2012-01-17	Issue Date for D'442 Patent
2012-07-23	Priority Date for D'933 Patent
2013-01-31	Priority Date for D'047 Patent
2013-10-22	Issue Date for D'047 Patent
2014-03-11	Issue Date for D'933 Patent
2016-01-29	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D692,047 - Eyeglass, issued October 22, 2013

The Invention Explained

Problem Addressed: The implicit problem addressed by a design patent is the need for a new, original, and ornamental design for an article of manufacture to distinguish it aesthetically from prior designs (Compl. ¶7).
The Patented Solution: The patent discloses an ornamental design for a full-frame eyeglass. The design is characterized by large, substantially rectangular lenses with rounded corners, a thick frame, a saddle-style nose bridge, and wide temple arms that taper toward the earpieces (D'047 Patent, FIGS. 1-6).
Technical Importance: In the consumer eyewear market, novel ornamental designs serve as a key product differentiator and a component of brand identity (Compl. ¶7).

Key Claims at a Glance

The patent contains a single claim for the ornamental design as depicted in its figures (D'047 Patent, Claim).
The core visual elements of the claimed design include:
- The overall shape and contour of the eyeglass frame front.
- The specific proportions of the lenses relative to the frame.
- The shape and curvature of the temple arms as they extend from the frame front.
The complaint asserts infringement of the D'047 patent generally, which encompasses its single claim (Compl. ¶41).

U.S. Design Patent No. D700,933 - Eyeglass, issued March 11, 2014

The Invention Explained

Problem Addressed: The patent addresses the need for a new, original, and ornamental design for an eyeglass, distinct from prior art designs (Compl. ¶7).
The Patented Solution: The patent protects the ornamental design for an eyeglass featuring a full frame with generally ovoid lenses. Key features include a prominent keyhole-style nose bridge and a distinct ornamental element at the hinge point where the temple arms connect to the frame front (D'933 Patent, FIGS. 1-6).
Technical Importance: Like the D'047 patent, this design provides a unique aesthetic for a consumer product in a design-driven industry, contributing to its market appeal and brand recognition (Compl. ¶7).

Key Claims at a Glance

The patent contains a single claim for "The ornamental design for an eyeglass, as shown and described" (D'933 Patent, Claim).
The core visual elements of the claimed design include:
- The overall shape of the frame front, including the keyhole bridge.
- The specific shape of the lenses.
- The appearance of the hinge-area ornamentation.
- The profile and curvature of the temple arms.
The complaint asserts infringement of the D'933 patent generally (Compl. ¶43).

Multi-Patent Capsule: D610,603 - Eyeglass and Eyeglass Components

Technology Synopsis: This patent claims an ornamental design for a semi-rimless eyeglass, characterized by a distinct curvature of the upper frame, a sculpted nose piece assembly, and sharply angled temple arms with textured details (D'603 Patent, FIGS. 1-6). The design aims to create a unique aesthetic for performance-oriented eyewear (Compl. ¶7).
Asserted Claims: The single claim for the ornamental design as shown and described (D'603 Patent, Claim).
Accused Features: The overall design of Defendant's OV5453K model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶45).

Multi-Patent Capsule: D615,580 - Eyeglass Frame and Eyeglass Components

Technology Synopsis: This patent claims an ornamental design for an eyeglass frame and components, featuring a continuous, curved brow bar, integrated nose pads, and temple arms with a distinct, sculpted hinge mechanism (D'580 Patent, FIGS. 1-6). The design creates a streamlined, wraparound aesthetic (Compl. ¶7).
Asserted Claims: The single claim for the ornamental design as shown (D'580 Patent, Claim).
Accused Features: The overall design of Defendant's OV5457K model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶47).

Multi-Patent Capsule: D573,172 - Eyeglass Components

Technology Synopsis: This patent claims an ornamental design for eyeglass components, specifically the temple arms and hinge portions. The design features a broad, straight temple arm that abruptly tapers, with a metallic-appearing insert (D'172 Patent, FIGS. 1-7). The lenses and frame front are shown in broken lines, indicating they are not part of the claimed design.
Asserted Claims: The single claim for the ornamental design as shown and described (D'172 Patent, Claim).
Accused Features: The overall design of Defendant's OU004KK model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶49).

Multi-Patent Capsule: D565,088 - Eyeglass and Eyeglass Components

Technology Synopsis: This patent claims an ornamental design for a full-frame eyeglass characterized by large, rectangular lenses and very wide, blocky temple arms that maintain their width for a significant portion of their length before tapering (D'088 Patent, FIGS. 1-6).
Asserted Claims: The single claim for the ornamental design as shown and described (D'088 Patent, Claim).
Accused Features: The overall design of Defendant's OU004KK model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶51).

Multi-Patent Capsule: D564,572 - Eyeglass and Eyeglass Components

Technology Synopsis: This patent claims an ornamental design for a full-frame eyeglass with a distinct, heavily contoured and curved frame that wraps around the face. The temple arms are thick and feature complex, sculpted surfaces (D'572 Patent, FIGS. 1-6).
Asserted Claims: The single claim for the ornamental design as shown and described (D'572 Patent, Claim).
Accused Features: The overall designs of Defendant's MD3017 and OV21K model sunglasses are alleged to be substantially similar to the claimed design (Compl. ¶53).

Multi-Patent Capsule: D652,442 - Eyeglass

Technology Synopsis: This patent claims an ornamental design for an eyeglass with a full, relatively thin frame and large, squarish lenses. The temple arms are wide at the hinge and feature a gentle, continuous curve as they taper (D'442 Patent, FIGS. 1-6).
Asserted Claims: The single claim for the ornamental design as shown and described (D'442 Patent, Claim).
Accused Features: The overall design of Defendant's OV5454K model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶55).

Multi-Patent Capsule: D547,793 - Eyeglasses

Technology Synopsis: This patent claims an ornamental design for a large, full-frame eyeglass with a shield-like appearance. The design is characterized by thick, straight temple arms and a relatively flat brow line (D'793 Patent, FIGS. 1-6).
Asserted Claims: The single claim for the ornamental design as shown and described (D'793 Patent, Claim).
Accused Features: The overall design of Defendant's OV5001PK model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶57).

Multi-Patent Capsule: D469,458 - Eyeglass Front

Technology Synopsis: This patent claims an ornamental design for only the front portion of an eyeglass. It features small, ovoid lenses set in a thin, wire-like frame with a double-bridge structure (D'458 Patent, FIGS. 1-6). The temple arms are disclaimed via broken lines.
Asserted Claims: The single claim for the ornamental design as shown and described (D'458 Patent, Claim).
Accused Features: The overall designs of Defendant's RAA08PB and 5423 model sunglasses are alleged to be substantially similar to the claimed design (Compl. ¶59).

Multi-Patent Capsule: D462,375 - Eyeglass and Eyeglass Components

Technology Synopsis: This patent claims an ornamental design for a semi-rimless eyeglass with a thin, wire-like frame and temple arms. The lenses, shown in broken lines, are not part of the claimed design. The design focuses on the shape of the metal components, including the bridge and hinges (D'375 Patent, FIGS. 1-6).
Asserted Claims: The single claim for the ornamental design as shown and described (D'375 Patent, Claim).
Accused Features: The overall design of Defendant's 5425 model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶61).

Multi-Patent Capsule: D564,571 - Eyeglass and Eyeglass Components

Technology Synopsis: This patent claims an ornamental design for a semi-rimless eyeglass frame, where the lenses are not part of the claim. The design is characterized by a sweeping brow bar and uniquely sculpted temple arms that appear to integrate seamlessly with the hinge (D'571 Patent, FIGS. 1-6).
Asserted Claims: The single claim for the ornamental design as shown and described (D'571 Patent, Claim).
Accused Features: The overall design of Defendant's OH22407K model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶63).

Multi-Patent Capsule: D648,771 - Eyeglass

Technology Synopsis: This patent claims an ornamental design for a full-frame eyeglass with a heavy, blocky appearance. The design features large rectangular lenses and very wide temple arms that include a distinct textured or indented pattern (D'771 Patent, FIGS. 1-6).
Asserted Claims: The single claim for the ornamental design as shown and described (D'771 Patent, Claim).
Accused Features: The overall design of Defendant's PG4816 model sunglasses is alleged to be substantially similar to the claimed design (Compl. ¶65).

III. The Accused Instrumentality

Product Identification: The complaint accuses numerous models of sunglasses sold by Defendant, including models MD3072-RV, MD3046, MD3046-RV, OV5453K, OV5457K, OU004KK, and others (Compl. ¶¶ 41, 43, 45, 47, 49, 51).
Functionality and Market Context: The accused instrumentalities are sunglasses offered for sale, distribution, and/or importation by the Defendant (Compl. ¶22). The complaint alleges that these products are sold on Defendant's website (Compl. ¶41). The complaint provides a side-by-side visual comparison for each accused model against a figure from the corresponding asserted patent. For example, a photograph shows the accused MD3072-RV sunglasses, which feature a full black frame, large squared-off lenses with a reflective blue-green coating, and wide temple arms (Compl. p. 10). The complaint alleges that the accused products are "blatant knock-offs" or "nearly identical copies" of Oakley's patented designs (Compl. ¶¶ 44, 46).

IV. Analysis of Infringement Allegations

D692,047 Infringement Allegations

Claim Element (from Single Design Claim)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for an eyeglass, as shown and described.	The overall ornamental appearance of Defendant's MD3072-RV sunglasses, including the shape of the frame front, the proportions of the lenses, and the configuration of the temple arms, is alleged to be substantially similar to the patented design. A visual comparison is provided showing the accused product next to a figure from the patent.	¶41, p. 10	FIGS. 1-6

D700,933 Infringement Allegations

Claim Element (from Single Design Claim)	Alleged Infringing Functionality	Complaint Citation	Patent Citation
The ornamental design for an eyeglass, as shown and described.	The overall ornamental appearance of Defendant's MD3046 and MD3046-RV sunglasses, including the frame shape, keyhole bridge, and temple design, is alleged to be substantially similar to the patented design. Visuals show the two accused models next to a figure from the patent.	¶43, p. 11	FIGS. 1-6

Identified Points of Contention:
- Visual Similarity: The central dispute will be a factual one of visual comparison. The test is whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint's side-by-side comparisons, such as the one for the OV5453K sunglasses and the D'603 patent, will be primary evidence for the plaintiff (Compl. p. 12). The defense will likely highlight any minor differences in shape, proportion, or surface ornamentation to argue against a finding of substantial similarity.
- Scope of the Claimed Design: A likely point of contention will be the scope of the patent protection. The defense may argue that any similarities are attributable to functional aspects of eyewear (e.g., the basic need for two lenses and two temple arms) or to design elements that are common in the prior art. Dissecting which elements of the design are purely ornamental and which are functional or conventional will be a key task for the court.

V. Key Claim Terms for Construction

The Term: "the ornamental design ... as shown"
Context and Importance: In a design patent case, there are no traditional terms to construe, as the claim is defined by the drawings. However, the court must determine the scope of "the ornamental design." Practitioners may focus on this "term" because its interpretation dictates what is being compared for infringement. The core question is what constitutes the protected design in the eyes of the statutorily defined "ordinary observer."
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation (Favoring Plaintiff): The plaintiff will argue that the "design" is the overall visual impression created by the article as a whole, comprised of all the features illustrated in solid lines in the patent figures (e.g., D'047 Patent, FIGS. 1-6). The combination of these features creates a unique aesthetic that is protectable, even if individual elements are not new.
- Evidence for a Narrower Interpretation (Favoring Defendant): The defendant may argue that the scope is limited only to the novel, non-functional aspects of the design. Furthermore, in patents where features are depicted in broken or "phantom" lines (e.g., the lenses in the D'375 patent), a defendant will argue those features are explicitly disclaimed from the patent's scope and must be ignored in the infringement analysis (D'375 Patent, Description). This raises the question of whether similarity in disclaimed features can be considered.

VI. Other Allegations

Indirect Infringement: The complaint's factual counts allege direct infringement by Defendant for its own acts of making, using, selling, and importing the accused sunglasses (Compl. ¶¶ 41, 43, 45, etc.). The complaint does not plead specific facts to support a claim of induced or contributory infringement, such as alleging Defendant knowingly encouraged third-party resellers to infringe.
Willful Infringement: The complaint alleges that Defendant's infringement was "knowingly, intentionally, and willfully" done (Compl. ¶41). This allegation is supported by claims that Defendant had actual knowledge of Oakley's rights or that infringement was obvious, given Oakley's "iconic" and "well-known" designs and the allegation that the accused products are "blatant knock-offs" and "nearly identical copies" (Compl. ¶¶ 13, 15, 42, 44).

VII. Analyst’s Conclusion: Key Questions for the Case

A central issue for the court will be one of visual comparison: when applying the "ordinary observer" test, are the accused sunglasses "substantially the same" as the patented designs? The outcome will depend on whether the overall impression of the designs is similar enough to cause deception, or if the subtle differences highlighted by the defense are sufficient to distinguish them legally.
A second core question will involve the scope of patentability: to what extent are the similarities between the products and the patents based on purely ornamental features, versus unprotected functional requirements or design elements common in the eyewear prior art? The defendant will likely seek to limit the scope of the patents to their most unique, non-functional elements.
Finally, a key question for damages will be one of intent: does the evidence support the complaint's allegation of willful infringement, suggesting deliberate copying of well-known designs, or can the defendant demonstrate that any similarities were coincidental or the result of independent design?